June 14, 2016
Software Can Make “Non-Abstract” Improvements To Computer Technology
Harness the Lesson: In determining patent eligibility under 35 U.S.C. § 101 for computer implemented inventions, the relevant question to ask under the first step 2A of the Mayo/Alice framework is whether the claims are directed to an “improvement to computer functionality;” and not merely whether the claims are directed to an abstract idea. As defined in Enfish, patent claims directed to improvements in computer-related technology, including those directed to software, are not necessarily abstract. Accordingly, Enfish provides substantiation to the “safe harbor” guidance in Alice that improvement of the functioning of the computer itself (or improving an existing technological process) might not succumb to the abstract idea exception and validates the position that the Mayo/Alice framework does not have to progress to the second step 2B (i.e., the “significantly more” step), if the claims are directed to an improvement to computer functionality.On November 3, 2014, District Judge Pfaelzer entered summary judgment for Microsoft Corp. (“Microsoft”) in the Central District of California, and held that Enfish, LLC’s (“Enfish”) U.S. Patents 6,151,604 (“the ’604 Patent”) and 6,163,775 (“the ’775 Patent) were (i) patent ineligible under 35 U.S.C. § 101, (ii) invalid as being anticipated under 35 U.S.C. § 102, and (iii) not infringed by Microsoft’s ADO.NET framework product. Enfish v. Microsoft, 2:12-cv-0736, Summ. J., Dkt. No. 303, (C.D. Cal., Nov. 3, 2014).
On May 16, 2016, Judges Hughes, Moore, and Taranto reversed-in-part, vacated-in-part, and affirmed-in-part the lower court’s judgment. Enfish, LLC. v. Microsoft Corp., No. 2015-1244 (Fed. Cir. 2016). In particular, the Federal Circuit held that the claims of the ’604 and ’775 Patents (i) were patent eligible under 35 U.S.C. § 101, (ii) not anticipated under 35 U.S.C. § 102, and (iii) not infringed by Microsoft’s ADO.NET framework product.
With respect to the patent eligibility question under 35 U.S.C. § 101, the Court held that when determining whether a claim is “directed to” an abstract idea under Step 2A of the Mayo/Alice test, the correct inquiry is whether the claims are directed to an improvement to computer functionality versus simply being directed to an abstract idea. The Court noted that software can make non-abstract improvements to computer technology just as hardware improvements can, noting that sometimes the improvements can be accomplished through either route. As such, the Court held that the correct inquiry at the first step 2A of the Mayo/Alice test is whether the claims are directed to a specific improvement to the way computers operate.
Additionally, the Court cautioned that describing the claims at a high level of abstraction and untethered from the language of the claims, as done by the District Court in this case, all but ensures that the exceptions to 35 U.S.C. § 101 swallow the rule. As such, the Court concluded that claims directed towards specific improvements in computer technology are not per se abstract under Step 2A of the two-part inquiry of Mayo/Alice.